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Patent History Materials Index - ANNUAL REPORT OF THE COMMISSIONER OF PATENTS FOR 1889

Annual Report of the Commissioner of Patents to Congress for the year ending December 31, 1889

Laid before the House of Representatives by the Speaker February 6, 1890, referred to the Committee on Patents, and ordered to be printed

Department of the Interior
United States Patent Office
Washington, D.C., January 31, 1890

To the Senate and House of Representatives of the United States of America in Congress assembled:

The Commissioner of Patents is required by law to report to Congress during the month of January in each year a statement in detail of all moneys received and expended, a list of patents granted or extended, including the names and places of residence of the patentees, together with such other information of the condition of the Patent Office as may be useful to Congress or the public.

In entering upon the discharge of the duties thus imposed I am reminded that this is the one hundredth year of the American patent system. It was on the 8th day of January, 1790, that President Washington, in an address constituting his first annual message, said to the assembled Houses of Congress:

I cannot forbear intimating to you the expediency of giving effectual encouragement, as well to the introduction of new and useful inventions from abroad, as to the exertions of skill and genius in producing them at home.

Both Houses of Congress sent cordial responses to the President's address, and promised, especially to his suggestions for the encouragement of science and the arts, "such early attention as their respective importance requires." A bill was soon matured which, after amendment in the Senate, became on the 10th of April, 1790, by the signature of President Washington, the first American law authorizing the granting of patent for mechanical inventions. The number of patents granted during the first year was 3. The number granting during the first fifty years was 12,421. Since that time, under the act of 1836 and subsequent statutes based upon the same general principles, a marvelous growth has attended the system -- a growth that has been signalized by the corresponding development in every department of American industry. So vast has this growth become that during the last calendar year -- a year nearly coincident with the centennial year of the patent system -- nearly 24,000 patents were granted, making the whole number of mechanical patents granted prior to January 1, 1890, 428,622. The number for the entire century ending April 10, 1890, will approximate 437,000. It is not surprising that a distinguished statesman, late Prime Minister of England, recently said of the United States: "In no one country, I suppose, is there so careful a cultivation of the inventive faculty."

I have thus in the briefest manner directed attention to the growth of the patent system and to the fact that this is its centennial year, because I cannot avoid the belief that the suggestions which I shall have the honor to make derive a special claim and an added urgency from the fact that the Patent Office should enter upon the second century of its usefulness fully equipped for the discharge of its responsible duties.

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The following tables present a comparative statement of the business of the Patent Office since the enactment of the statute of 1836 and exhibit in detail the business of the Office during the last calendar year:

Statement showing the number of the first patent, design patent and reissued patent, and the number of the first certificate of registration of a trade mark and a label issued in each calendar year since July 28, 1836, when the present series of numbers of letters patent commenced, together with the total number of each issued during the year. The number of patents granted prior to the commencement of this series of numbering (July 28, 1836) was 9,957. [Divided for convenience of typing into two tables KWD]

Approximate amount expended by the Department of the Interior on account of this Office from January 1, 1889, to December 31, 1889. [fn.: A literal compliance with the provisions of the statute requiring "a detailed statement of all expenditures for contingent and miscellaneous expenses" is not possible, for the reason that the contingent fund for the several Bureaus of this Department was consolidated by the act of March 3, 1883, and hence no part of that fund is disbursed by the Patent Office, and I am furnished only with an approximate sum expended on behalf of the Patent Office.]

Stationery $8,169.30
Postage on foreign matter 1,108.00
Printing and binding 227,457.19
Watch force 16,600.00
Furniture 2,479.00
Carpets 502.55
Ice 588.63
Telephones 446.75
Washing towels 107.57
Sundries 4,164.98
__________
Total 261,623.97
============
Aggregate amount of expenditures 1,052,955.96
Receipts over Expenditures
Total receipts $1,281,728.05
Total expenditures 1,052,955.96
____________
Receipts over expenditures 228,772.09
============
Statement of balance in the Treasury of the United States on
account of the patent fund
Amount to the credit of the fund January 1, 1889 $3,402,898.23
Amount of receipts during the year 1889 1,281,728.05
____________
Total 4,684,626.28
Deduct expenditures for the year 1889 1,052,955.96
____________
Balance January 1, 1890 3,631,670.32
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Summary of the Business of the Patent Office
Number of applications for patents for inventions 39,607
Number of applications for patents for designs 857
Number of applications for reissues of patents 111
______
Total number of applications relating to patents 40,575
======
Number of caveats filed 2,481
Number of applications for registration of trademarks 1,386
Number of applications for registration of labels 828
Number of disclaimers filed 15
Number of appeals on the merits 1,141
_____
Total 5,851
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Total number of applications
requiring investigation and action 46,426
======
Number of patents issued, including designs 24,083
Number of patents reissued 75
Number of trademarks registered 1,229
Number of labels registered 319
Total 25,706
======
Number of patents expired during the year 12,200
Number of patents withheld for non-payment of final fee 3,006

From the foregoing it will be seen that the total number of applications received, including designs, reissues, etc., was 40,575; that the total number of patents, etc., granted was 25,706; that the total receipts were $`,281,728.05, and that the total expenditures were $1,052,955.96, leaving a surplus of $228,772.09 were to be turned into the Treasury of the United States, making a total balance in the Treasury to the credit of the patent fund of $3,631,670.32.

Additional Room

From the consideration of the fact that inventors and persons interested in inventions have during the past year paid into the Treasury of the United States the sum of $228,772.09 over and above all the current expenses of the Patent Office, I turn to the consideration of its pressing needs.

The first need of the Office is additional room. I could afford to be silent upon this subject, in view of the urgent words on behalf of the Patent Office of the Honorable Secretary of the Interior in his recent report, if it were certain that my silence would not be misinterpreted. The present situation is most deplorable. Almost literally speaking, the Patent Office is crowded into a corner of the noble building which was paid for by its patrons and which bears its name. The necessity for more room and better facilities has been urged upon Congress by Commissioner after Commissioner, and has become more imperative every year. As long ago as 1882 Mr. Commissioner Marble asked for thirty additional rooms. Mr. Commissioner Butterworth, in his report for 1884, called attention to the utter inadequacy of room and facilities for conducting the business of the Patent Office and to the fact that the health of the employees had been impaired and death had resulted from damp and overcrowded rooms. In his report for 1885 Mr. Commissioner Montgomery said that it was "not extravagant to assert that every room in the building could be advantageously used today by this Bureau." My immediate predecessor also urged upon Congress the necessity for relief. During the past year it has been found almost impossible to find space for the storage of current copies of patents as they were produced from week to week. I can add nothing to what has been said by my predecessors, except, perhaps, to enter a little more detail in setting forth the overcrowded condition of the Office. The room occupied by Division XXVIII has nineteen by twenty-three feet of floor space. In it are nine desks, occupied by nine men and women. In addition to the desks are book and file cases arranged against the wall and extending upon all sides of the room. In the room occupied by Division V the floor space is thirty-five by twenty feet in extent. In it are ten desks, occupied by ten persons. Book and file cases extend around the room on every side. These instances differ only in degree from nearly all the rooms devoted to the business of this Bureau.

The subject to which I am now directing attention is one in which the deepest interest is felt by inventors and by the very large portion of the American people who are directly or indirectly interested in inventions. There is a widespread feeling that the large excess of fees over expenses should be devoted to affording facilities for the conduct of the business of the Office. There can be no doubt whatever that this feeling is a reasonable one. No one, I think, has ever suggested that the Patent Office should be made a permanent source of revenue for the general purpose of the Government.

I urgently request that relief be afforded for the overcrowded condition of the Patent Office

Laboratory

Not only is the space available for the general business of the Office insufficient, but in some directions its functions are practically suspended for want of room and facilities whereby to conduct them. Quite frequently the Commissioner is requested to permit examiners to visit manufactories, sometimes in distant parts of the country, to determine whether a new invention is practicable or operative, or to ascertain the principle upon which a machine operates or a process is conducted. To grant the request is to place the entire time of the examiner at the disposal of one applicant until the question is determined, to the delay and detriment of other inventors. For the determination of such questions the Patent Office should have a suitable laboratory. An inconsiderable sum would secure the necessary apparatus and appliances for the chemical, electrical, and other experiments and investigations that are urgently demanded by applicants for patents, and that cannot be dispensed with if the Patent Office is to be fully equipped to do the work devolved upon it by law. I recommend, in connection with measures for supplying additional room, a reasonable appropriation to provide for the purchase from time to time of suitable apparatus for a laboratory.

Increase in Force

I am glad to be able to report that the work of the Patent Office is, comparatively speaking, in an advanced condition. On the 21st day of January, 1890, in twenty-three of the thirty examining divisions all applications that had been in the Office for two months had been acted upon, while in several divisions the work was less than one month in arrears. This comparatively satisfactory condition of the work has been brought about by almost heroic efforts on the part of the examining corps, who take pride in the good name of the Office, and who spare no labor within office hours or out of office hours to second the efforts of the Commissioner in bringing up the work. But the limit of possible attainment with the present force of employees seems to be practically reached. During the past year especial attention has been given to ascertaining by what changes in methods of examination the maximum of accomplishment can be reached by the expenditure of a given amount of labor. I cannot avoid the belief that any increase in the number of applications examined must be secured by a corresponding deterioration in quality of the work if the force is to remain as at present. The work of examination cannot be conducted under whip and spur. Its very nature implies deliberation. No matter how extended or careful the investigation, if one decisive anticipating reference is overlooked any patent that may be granted will be worthless. I trust the small increase in the force called for by the estimates will be granted.

Classified Abridgment of Patents

The attention of Congress has several times been directed to the subject of authorizing the publication of a classified abridgement of patents. As long ago as 1848 Mr. Commissioner Ewbank declared that such a work ought to be prepared and placed in every city, town, and district library. He declares his belief that it would save one-half the time of the examiner and supersede three-fourths of an irritating correspondence arising from disallowed claims, and, further, that the work, when made accessible to popular reference, would effect a saving of millions. Several Commissioners have since that time urged upon Congress the need of such a digest.

In [the annual report for KWD] 1880 Mr. Commissioner Marble said:

Attention has been called by several of my predecessors to the necessity of having a digest made, for the use of the Office, and of the public, of the inventions patented in this and foreign countries, as well as those disclosed in publications, technical works, and in scientific and other libraries. At the risk of repetition, I desire also to call the attention of Congress to the importance of such a work, in the hope that the necessity so long felt and so often referred to may, at no distant day, be relieved, and the wants of the Office and the public supplied. Nearly 240,000 patents have already been issued by this office. If the examinations of the Office upon applications filed were limited to American patents only, the necessity for a digest of such patents would, to any person at all acquainted with the business of this Office, be apparent; but when to this number of patents are added those issued in foreign countries, as well as the inventions described in scientific and other works, the importance of such a digest, in order that an examiner may know what the state of the particular art is, cannot be overestimated. As well might it be expected that a lawyer could promptly tell what the law is upon a given subject from the isolated decisions found in the reports of the decisions of the courts of this and other countries, without a digest of such decisions, as that an examiner, although an expert in the particular class, can determine from the great number of inventions already patented, as well as those described in books and publications, whether a particular device or composition of matter is patentable, without some book in which reference is made to all the patents which have been issued in that particular class, as well as the inventions described in books and publications. The preparation of such a work would cost, it is true, a large sum of money and consume considerable time; but I think the expense to the Government would soon be reimbursed by its sale. If not in that way directly, certainly it would by its sale and the increased facility which it would afford to the examining corps of the Office, lessening their labors, and hence the necessity for so large a number of persons being employed on that kind of work. The advantage to the public, and especially to inventors and manufacturers, would be incalculable. Inventors often spend months, and even years, in producing a device to do a certain thing, only to find at the end of the time thus spent that their inventions have been fully anticipated by other devices, if not identical with the one presented, in all respects similar to it.

Capital, always cautious, seeks investment in property the chief value of which consists in the facts that its owner has the exclusive right to produce or use it, which right is guaranteed by a patent of the United States, more cautiously than in any other kind of property, because of the uncertainty felt in such guaranty of the Government until the validity of such patent is tested by the severe ordeal of a trial in the courts. This feeling of uncertainty, this want of confidence, and hesitation on the part of capitalists and manufacturers may be overcome, in a large degree at least, by having the inventions in each and every class so brought together that at least those skilled in a particular art can determine whether a particular device or composition of matter is anticipated in a former patent or publication. [....]

For the foregoing reasons, and for reasons which have been given by my predecessors in their reports on this subject, I earnestly recommend that action be taken by Congress looking to an early commencement of the preparation of this work. At some time, if our patent system is continued, such a work will become so necessary that its preparation can no longer be delayed. Delay in its preparation will only add to its cost when it is commenced, because the material to be examined and classified is constantly increasing. In the meantime the Office must suffer the inconvenience of not having it for daily use.

In response to this powerful presentation of the question, Congress, by an act approved March 3, 1881, made an appropriation of $10,000, and authorized the commencement of the work. Thereupon, under the supervision of the Commissioner of Patents, the task of preparing and classifying an abridgment of patents was entered upon, and progressed far enough to include nearly all the patents relating to agricultural implements. No additional appropriation was made, however, so that nothing further has been done, and no money has been available for the publication of the digest, even as far as completed. There can be no doubt, however, that the work thus begun should go on to completion. In the first place, it would be of the greatest value in facilitating the labors of this Office by lessening the work of examiners, and, excepting as the number of applications should greatly increase in the future, would permit of a decrease in the number of the force. It would also be the means of preventing the granting of worthless patents through the failure to discover apt references -- a failure which must result in a certain small percentage of cases so long as examiners are deprived of the most efficient means of conducting their investigations. It would enable the patrons of the Office to prepare their cases intelligently, and by enabling them to readily ascertain the state of the art pertaining to a supposed new invention would in a vast number of cases cause the withholding of applications which now take up the time of examiners to no useful purpose. It would to a very great extent transfer the work of examination from the Patent Office to the offices of attorneys, and thus afford great relief to the present overburdened condition of the examining divisions. It would enable patentees and manufacturers to definitely understand the extent of their rights as secured by patents, and by disseminating knowledge of what has been done in all the various arts would prevent inventors from traversing the ground occupied by predecessors in their noble pursuit. It would be remunerative to the Government, because such a digest would meet with a ready sale among inventors and manufacturers, and the entire cost of its preparation and publication would soon be reimbursed. And, finally, it is indispensable if the United States would keep pace with other nations in whatever pertains to the development of its patent system.

All the inventions patented in Great Britain are to be found in a summarized form in classified abridgements, the value of which cannot be overestimated. Each volume relates to a certain class of invention, the summarized statements being arranged chronologically. A single book contains all that is needed to be known in order to tell whether the article supposed to be new has ever been patented since the foundation of the Government.

I earnestly recommend such action on the part of Congress as will permit an early renewal of the work of preparing abridgments of patents, under the supervision of the Commissioner, with a suitable appropriation to defray the expenses incurred.

Photolithography

It is well understood that the drawings of patents and of copies of patents, designs, and trademarks, as well as nearly the whole of the Official Gazette, are produced by photolithography. Unquestionably this work should be done by the Patent Office; but with the present room, force, and facilities the undertaking of the work by the Office is out of the question. The bills appropriating money for photolithographing have for several years contained the following provision:

Said photolithographing or otherwise producing plates and copies referred to in this and the two preceding paragraphs to be done under the supervision of the Commissioner of Patents, and in the city of Washington, if it can be there done at reasonable rates; and the Commissioner of Patents, under the direction of the Secretary of the Interior, shall be authorized to make contracts therefor.

During the present fiscal year the work is being done at the usual rate at Washington, it having been found that reasonable rates could be obtained. Before signing the contract I took efficient measures to ascertain at what prices similar work could be done in New York and other large cities, and am satisfied that the prices named in the existing contract comply with the requirements of the appropriation bill. The appropriation for photolithographing for the current fiscal year was the same in amount as for the previous year; but owing to the very large increase in the business of the Office, as appears by this report, a prospective deficiency of a small amount has been reported, with reference to which I request favorable action.

Accounting to the Treasury Department

The Commissioner of Patents and the Chief Clerk are both required to give bond with sureties to render to the proper officer of the Treasury a true account of all moneys received by virtue of their offices. The financial clerk is also a bonded officer.

Since the beginning of the present fiscal year a new system of accounting has been in operation, which makes it practically impossible for any loss to occur, and imparts a sense of security to the bonded officers of the Bureau. In accordance with this system, at the end of each month a full statement of all moneys received from every source is furnished to the Treasury Department, together with a statement of all certificates of deposit from the United States depositories of which this Office has notice. The correctness of this statement is vouched for by the financial clerk, the Chief Clerk, and the Commissioner of Patents. When this monthly statement is received by the Treasury Department, two officers are deputed, one by the Fifth Auditor and the other by the First Comptroller, who carefully examine the books and accounts of the Patent Office, and, having ascertained that the report is correct, so certify upon its face. In addition, a quarterly account-current is rendered to the Treasury Department. This system of accounting, suggested by the officials of the Treasury Department and heartily indorsed by the present Commissioner, has been found to be entirely satisfactory.

Duties of Assistant Commissioner

No law at present defines the duties of the Assistant Commissioner, excepting section 178 of the Revised Statutes, which prescribes the conditions under which he shall be Acting Commissioner. The great increase in the business of the Office has to such an extent increased the labors of its head that it is found necessary to have the Assistant discharge a portion of the daily duties which the law devolves upon the Commissioner in terms. There should be a law defining the duties of the Assistant or the Commissioner should be authorized to devolve any portion of his duties upon the Assistant, either by general order or by special designation.

Legislation

Limitation of Patents

Section 48878 of the Revised Statutes provides that every patent granted for an invention that has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term. In some foreign countries patents are granted for extended as well as for original terms. In some countries the extension is demandable of right, while in others it rests in governmental discretion; in some a patent is liable to become forfeited for non-payment of fees required by law to be paid at intervals, and in some forfeiture is liable to take place for other reasons, which need not here be enumerated. For many years it was understood that the original term of the foreign patent controlled the duration of the American patent subsequently granted for the same invention, and that the American patent would neither be extended nor shortened by its forfeiture. So long as the law was thus understood no considerable difficulty was experienced in ascertaining the duration of the term of the American patent. In a recent decision of the Supreme Court of the United States, however, it was decided that where the foreign patent for the same invention which was subsequently patented in the United States had been extended, and the foreign act under which the extension was granted was in force when the United States patent was applied for and issued, and the foreign extension was a matter of right at the option of the patentee on the payment of the required fee, and the original and extended terms of the foreign patent had been continuous and without interruption, the Untied States patent did not expire with the original term of the foreign patent. And still more recently it has been held by some of the circuit courts of the United States that forfeiture of the foreign patent, even during its original term, terminates the American patent also.

Under these circumstances it is manifestly impossible for the Commissioner of Patents in granting a patent for an invention previously patented abroad to prescribe in terms the period of exclusive use. To grant the patent for seventeen years and leave the courts to ascertain its lawful duration is out of the question, as patents so granted would be liable to become instruments of fraud in the hands of unscrupulous persons. Hence, in all cases where patents have previously been granted for the same invention in foreign countries, the present practice is to insert a provision in the grant stating that the term is subject to the limitation prescribed by section 4887 of the Revised Statutes, by reason of certain foreign patents (specifying them) which have been granted for the same invention. A law which obliges the Commissioner to place the seal of the United States Patent Office upon Letters Patent for American inventions which state that foreign patents must be examined and foreign laws consulted in order to ascertain when the American patent will expire, should be banished from the statute books. Aside from its being un-American in its nature, it works the greatest hardship to American inventors. By reason of it the pecuniary value of the American patent is always greatly impaired and is often substantially destroyed. It is not an uncommon occurrence for negotiations for the sale of important patents, involving large sums of money, to fall through because of the uncertainty that surrounds the duration of the grant, in view of foreign patents first obtained for the same invention. Again, the law as it now stands operates in favor of foreign countries by inducing inventors to confer their inventions gratuitously upon foreign nations rather than run the risk of impairing their domestic patents by complicating them with patents secured abroad. Thus the law, which is believed to have been originally enacted for the purpose of putting a limit to the privileges conferred upon foreign patentees, has in its operation become a standing menace to American inventors. I believe that all competent persons who have given attention to the subject agree that future patents for American inventions should be granted for the full term of seventeen years provided by statute, whether or not a patent has been previously obtained in a foreign country. I most earnestly recommend that, at least as to American inventions patented hereafter, section 4887 of the Revised Statutes be modified so as to prevent a foreign patent previously obtained from affecting the duration of the American patent. I have limited my suggestion to future inventions, because the question whether other patents than future patents should be affected by amendatory legislation is one wholly for the wisdom of Congress, and the same may be said of the question whether foreign inventions as well as American inventions should be brought within the scope of the amended act. I may add with entire propriety, however, that the labors of this Bureau would be greatly lightened if patents for both foreign and American inventions should be granted hereafter for the definite fixed term prescribed by law.

There is another reason why section 4887 of the Revised Statutes should be modified or repealed. The United States is now one of the members of the International Union for the Protection of Industrial Property. This Union is based upon articles adopted on the 20th of March 1883, at Paris. The nations originally acceding to the Union were Belgium, Brazil, Spain, France, Guatemala, Italy, the Netherlands, Portugal, Salvador, Servia, and Switzerland. Other states subsequently became members of the Union, viz: Great Britain, Tunis, Norway, Sweden, the Dominican Republic, and the United States -- the ratification by the United States taking place March 29, 1887. One object of this Union is to provide that persons who have made applications for patents in one of the states of the Union may have a definite period within which to apply for a patent upon the same invention in the other countries belonging to the Union without being prejudiced by intermediate acts, such as the publication or use of the patented article. The period now fixed for that period is six months, but an article providing for an additional month for countries beyond the seas gives citizens of the United States seven months from the filing date of the American application within which to apply abroad without the loss of any rights existing at the date of the American application. But it is by no means an unusual thing for the American application to be much more than seven months in maturing into a patent. In a great many cases interference proceedings arise with other applications or prior patents. Sometimes several parties are involved in a contest for priority, and a complicated trial results, extending over an unfortunately long period of time. In all such cases the American inventor must be deprived of the benefits designed to result from the Union for the Protection of Industrial Property, or he must apply for a foreign patent within the treaty period of seven months. In case he elects to accept the latter alternative his foreign application is likely to mature into a patent before the obstacles to the granting of the American patent are removed, in which case section 4887 applies and limits the duration of the American patent, besides making it almost impossible to tell when the shortened term will expire. It is to be observed that the rights of the foreign inventor in this country are nowise affected by speed or delay in obtaining his own home patent, because the patent laws of foreign states do not make the duration of patents depend upon the expiration of the American term. Indeed, the American term is so much longer than the longest foreign term that no effect would be produced upon the latter even if the law under which it is granted should provide that it should expire with the American patent previously granted for the same invention. So long as section 48878 remains in force, American inventors and proprietors of trademarks must be, in great measure, deprived of the principal advantages intended to be conferred by the Industrial Union.

The Conference at Madrid

The adhesion of the United States to the Industrial Union has given a new direction to American thought upon the subject of patents and trademarks. Thereby the interests which this Bureau has in charge have assumed an international character and the Commissioner in acquainting Congress with its condition and needs is compelled to direct attention to the Union and to the questions arising in connection therewith. I have already shown that the citizens of the United States are prevented from deriving the full benefit of the treaty from the fact that the period of seven months within which an application may be made for a foreign patent without the loss of any rights through intermediate publication or use runs from the date of the application for the domestic patent. There is much reason to believe that at the time when this provision was adopted no consideration was given to the peculiar feature of the American patent system which requires a careful examination after application and before a patent is granted. On the other hand, there is much reason to believe that a change may still be effected which will, without prejudicing the rights of the subjects or citizens of other nations, make the treaty provision also subserve the needs and promote the interests of American inventors seeking patents in foreign countries. To accomplish this result it is only necessary to so change Article IV of the Final Protocol as to make the seven months "right of priority" run from the date of publication of the patent first applied for, instead of from the date of the application. If such a change could be effected, it would be of vast importance to American inventors and proprietors of trademarks. It is proper, therefore, for me to suggest that at the coming conference of the Union, to be held at Madrid on the first of April, 1890, the United States should be represented by delegates who are learned in matters pertaining to the American law of patents and trademarks, and who are fully informed as to those needs and interests of American inventors which can be subserved by giving a wise direction to the deliberation of the International Union.

Caveats

Section 4902 of the Revised Statutes provides that any citizen of the United States may file a caveat, and that an alien shall have the same privilege if he has resided in the United States for one year next preceding. By Article II of the International Union, ratified by the United States March 29, 1887, it is provided that the subjects or citizens of each of the contracting states shall enjoy in all the states constituting the Union, so far as concerns patents for inventions, trade or commercial marks and names, the advantages that the respective laws thereof at present accord to the subjects or citizens. Subsequently to the adhesion of the United States to the Union, one Ferdinand Bourquin, a Swiss citizen, who had not resided for one year in the United States, offered to file a caveat, basing his right upon the treaty provision referred to, and claiming that thereby the discrimination of the statute against alien inventors had been done away with. The question whether or not such was the case was submitted to the Department of Justice. The Attorney General decided (see 47, Official Gazette, 397) that the treaty was not self-executing, but required legislation to render it effective for the modification of existing laws. I therefore suggest whether the statute should not be so modified as to permit aliens to file caveats upon the same terms and conditions as citizens, thereby carrying into effect the provisions of the treaty stipulation.

Interstate Trade Marks

The right of Congress to provide for the registration of trademarks rests upon its constitutional power to regulate commerce among the States and with foreign nations and Indian tribes. The act of March 3, 1881, authorizes the registration of only such trademarks as are used in connection with foreign commerce or in commerce with the Indian tribes. Trademarks employed in connection with interstate commerce are wholly unprovided for by Congress. If there was ever believed to be any sound reason for leaving trademarks used in interstate commerce unprotected by registration, that reason would seem to be overborne by the same considerations which have led Congress to pass comprehensive statutes regulating interstate commerce. The question of registering trademarks used in interstate commerce is presented in a new aspect by the adhesion of the United States to the Union for the Protection of Industrial Property. Article VI of the Convention acceded to provides

Every trade or commercial mark regularly deposited in the country of origin shall be admitted to deposit and so protected in all the other countries of the Union.

Additional legislation would seem to be required to enable citizens of the United States to lay a basis for registration abroad by first effecting domestic registration when these trademarks are used in commerce among the States, and also to enable aliens to secure by appropriate Congressional action the benefit of the treaty stipulations.

I respectfully renew the recommendation of my predecessor that the provisions of the present law relating to the registration of trademarks be extended so as to cover trademarks used in interstate commerce, and in addition I suggest whether appropriate legislation should not be enacted to carry into effect the provision of the Industrial Union to which I have referred.

In this connection I ought also to direct attention to the fact that Articles IX and X of the Convention provide for the seizure upon importation of any articles of merchandise bearing an illicit trademark or a fraudulent indication of origin. It is believed that no act of Congress has ever contemplated the seizure of articles of merchandise bearing counterfeit trademarks. Whether a law should now be enacted,in view of the provision of the Industrial Union, is for Congress to determine.

Attention should also be directed to the fact that the United States is believed by many jurists to have no penal statute on the subject of trademarks. The act of Congress of August 15, 1876, prescribed penalties of fines and imprisonment for the infringers of registered trademarks and for the seizure and destruction of dies, plates, brands, etc., employed in the production of counterfeit labels and trademarks. This law was declared invalid by the Supreme Court of the United States on account of the unconstitutionality of the act of 1870 upon which it was based. When the present trademark law was enacted in 1881, limiting the right of registration to trademarks used in foreign commerce or in connection with commerce with the Indian tribes, the law of 1876 was believed by many to be still valid with reference to trademarks entitled to registration under the act of 1881. But it has been recently decided in the case of The United States v. Koch, (40 Fed. Rep., 250,) that an indictment under this act cannot be framed, that it shared the fate of the act of 1870, and was not made operative by the act of 1881. Perhaps it will be deemed wise by Congress to renew the legislation of 1876, so far as relates to trademarks entitled to registration by reason of their use in connection with those forms of commerce which Congress has the constitutional power to regulate.

Refundment of moneys paid by mistake

Rule 224 of the Rules of Practice of the Patent Office provides that moneys paid by actual mistake, such as a payment in excess, or when not required by law, or by neglect or misinformation on the part of the Office, will be refunded. This rule was established by the Commissioner of Patents, with the approval of the Secretary of the Interior, under power conferred by section 483 of the Revised Statutes, and governs the action of the Office in refunding moneys paid by mistake. Although this rule has been in force for many years and successive Commissioners have acted under it, I am satisfied that a course of business of such importance should have a more substantial basis than an office rule. Although the amount involved in each item of refundment is slight, the aggregate sum is not inconsiderable, amounting during the year 1889 to $12,500.63. It has been found in practice that the course prescribed by the rule is the only one adapted to the transaction of the business of the Office. For instance, it becomes necessary in many cases to refund money paid as fees for the registration of labels. The law provides that for the registration of a label a fee of six dollars shall be paid. On examination it is very frequently found that the label is not entitled to be registered. It has been held by competent authority that in all such cases the fee must be refunded. Meanwhile the money originally paid to the Commissioner has gone into the Treasury. Under such circumstances the only feasible method of complying with the law, and the method pursued by Rule 224, is to pay back the money received as the fee for registration out of any funds on hand, and to deduct the same from the aggregate sum payable to the Treasury on the next accounting. Under the system of accounting now employed the books and accounts of the Patent Office are thoroughly examined every month by officials of the Treasury Department, so that by no possibility could any detriment result if the course prescribed by Rule 224 had the express sanction of law. I therefore recommend that a statute be enacted directly authorizing the Commissioner of Patents to make refundments out of any money in his hands in all cases where payment may have been made by actual mistake, such as payment in excess, or when not required by law, or by neglect or misinformation on the part of the Office. No refundments are now made when the original payment was by certificate of deposit; but it is believed that the power to make refundments should include cases in which the original payment was by certificate. The ground of the repayment being that the payment should not originally have been accepted by the Office, or cannot lawfully be retained, it can make no difference how or in what form the payment was originally made.

Date of Letters Patent -- Section 4885

Section 4885 of the Revised Statutes provides that --

Every patent shall bear date as of a day not later than six months from the time at which it was passed and allowed and notice thereof was sent to the applicant or his agent; and if the final fee is not paid within that period the patent shall be withheld.

This section of the law permits an inventor to wait six months after the allowance of his application and after notice sent before paying the final fee, and yet it requires that the patent shall bear date not later than six months from the sending of such notice of allowance. The Office can do nothing toward preparing the Letters Patent until the final fee is paid, after which payment between two and three weeks must elapse before the patent is fully prepared for signature. In order to issue the patent upon the day of its date it has long been the practice of the Office to send a second notice of allowance in cases where the fee is paid so late that the patent cannot be ready for signature within the six months prescribed by law. This practice seems to be the only practicable one; but it certainly does not commend the statute which makes it necessary. I recommend such an alteration of this section as will remedy the defect which has been pointed out. One remedy which has been suggested is to require all patents to be granted as of the day on which the application was allowed and the patentee notified, six months being allowed for the payment of the final fee, as heretofore. Another method is to provide that the patent shall bear date not later than seven months after the allowance of the application and the sending of the notice. The latter method, which is perhaps the preferable one, would permit the Office to begin preparing the patent for signature after the payment of the final fee in all cases, and would also afford sufficient time to permit the issues for a given week to bear date the same day, in accordance with the present practice. It would probably be unwise to shorten the period for paying the final fee, as the present practice of making payment within six months has become so firmly established that numerous forfeitures would inevitably result from requiring the fee to be paid during a shorter period.

Interference proceedings

Complaints which are not wholly groundless are made against some features of the present system of conducting interferences. Section 4904 of the Revised Statutes requires that whenever an application is made for a patent which in the opinion of the Commissioner would interfere with any pending application, or with any unexpired patent, he shall institute proceedings to determine the question of priority of invention. It not infrequently happens that when an interference originally declared between two parties has been brought to a conclusion a third party appears in the Office as an applicant for a patent upon the same invention. Under such circumstances an interference must be declared between the prevailing party in the first proceeding and the later applicant, who is entitled to have the question tried, with all the rights pertaining to the cross-examination of witnesses, precisely as if no investigation had been had before his advent into the Office. So, too, when an interference is progressing toward its close, it sometimes occurs that interested parties enter the field, not for the purpose of obtaining a patent, but to prevent the first inventor from receiving his patent for as long a time as possible. It is currently believed that this is done in many cases in order that interested parties may meanwhile derive profit from practicing the invention. Some remedy should be found for the injustice both to the original inventor and to the public which the present system as established by law is liable to produce and sometimes does not produce. Perhaps a law based upon the fact that one of the earlier applicants is presumptively the first inventor, and providing that a patent shall issue to the applicant who prevails upon the interference as first declared, leaving subsequent applicants to contest priority with the patentee, would be found to constitute a practical remedy for some of the incidental evils of the existing system. I commend the subject to the attention of Congress.

Exchange of publications

I renew the recommendation that the Commissioner of Patents be authorized to exchange the Official Gazette for any publication of a scientific or useful character published in this or any foreign country adapted to the needs and uses of the Scientific Library of the Patent Office, and also that the Gazette may be furnished the clerk of any Federal court, or to the library belonging to the court, in exchange for copies of the decisions rendered by such Federal courts in patent and trademark causes.

Charge for certified copies

It is suggested that there should also be a law authorizing the Commissioner to furnish certified copies of printed matter at the same rates which would be charged for the same printed matter if uncertified, with the addition only of the fee now prescribed by law for the official certificate. No adequate reason can be given for charging ten cents per one hundred words for a certified copy of a printed patent when the same patent could be had, however extended, for the maximum price of twenty-five cents. The law might read as follows:

For certified copies of patents and other papers, when written copies are required, ten cents per one hundred words; but when certified printed copies of patents are required, twenty-five cents for the printed copy and twenty five cents for the certificate thereof.

Accompanying this report are lists or indexes of all patents granted during the calendar year 1889, properly classified under subjects of invention, and alphabetical lists of all patentees, with their places of residence. No patents were extended during the year.

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The place of the Patent Office among governmental agencies is as unique as it is important. It is concerned neither with the collection nor the expenditures of the ordinary public revenues. Unobtrusive and unsensational in its work and methods, it asks nothing of the Treasury except moneys which its patrons contribute, and nothing of Congress excepting measures to secure its highest efficiency. As it enters upon the second century of the system which it administers, the distrust which has existed to some extent of its functions has happily passed away. The triumphs of American invention have attracted universal admiration, and the conspicuous demonstration of their importance and usefulness has turned distrust into confidence. I verily believe that no law or legal system in any age or any land has ever wrought so much wealth, furnished so much labor for human hands, and bestowed so much material blessing in every way as the American patent system. If the first interest of humanity is employment, in no respect does the patent system so convincingly vindicate itself as in its tendency to enlarge the scope of remunerated toil. For just as the Western Territories -- now, for the most part, happily elevated to statehood -- have by inviting immigration reduced the fierceness of competition in the ranks of the established industries, so the new realms of industry that have been brought into being by American inventors have supplied millions of men with remunerative labor who would otherwise be competing for underpaid employment in the over-stocked labor markets of the old-fashioned industries.

But the territories of American invention know no Pacific sea. Their farther bounds expand as their hither borders are occupied. Illimitable in extent and inexhaustible in resources, they will yield up unimagined treasures of invention in all the coming centuries, just as they have done in the hundred years of marvels whose recorded story, drawing toward its close, is at once the tribute and the glory of the American patent system.

Respectfully and yet urgently I invoke the good offices of Congress in behalf of justice to the Patent Office.